'Eat More Kale' trademark flap more complex than simple slogan

Nov. 24, 2011

Bo Muller-Moore of Montpelier designs and prints custom organic cotton t-shirts, including his most popular design: Eat More Kale. National fast-food chain Chick Fil-A issued a cease-and-desist order after Muller-Moore tried to trademark the Eat More Kale slogan. / EMILY McMANAMY, Free Press

Written by

Dan D'Ambrosio

Bo Muller-Moore, purveyor of hand-stenciled "Eat More Kale" T-shirts screen printed one at a time in a room over his garage on Vine Street in Montpelier, has posted a couple of instructional videos on his website, eatmorekale.com, for those who want to make their own T-shirts.

Speaking in a melodious Southern accent, Muller-Moore, a native of Birmingham, Ala., begins by instructing viewers to secure a T-shirt to the "printing surface," a wooden door, with two Buck knives plunged into the shoulders of the shirt.

"Watch the fingers," Muller-Moore warns. "Perfect, just how I like it!"

Next, Muller-Moore, wearing a blue-and-white striped railroader's cap over his long hair pulled into a pony tail, moves on to the inking, after positioning an "Eat More Kale" stencil on the front of the shirt.

"I always print in black," Muller-Moore says. "Take a big old spoonful of ink and get ready for the next process. Here we go!"

With that, Muller-Moore sticks the spoonful of ink into his mouth, faces the T-shirt Buck-knived to the door, and then in a dramatic close-up, spit-takes the ink — John Belushi, Animal House-style — onto the suspended shirt. In the last frame, a smiling Muller-Moore, black ink dripping down his horseshoe moustache, holds up a freshly minted "Eat More Kale" T-shirt.

"There you go folks!" Muller says.

This is the man, and the business, that Chick-fil-A, an Atlanta-based fast food restaurant selling $3.5 billion of chicken sandwiches in 1,500 locations nationwide in 2010, is trying to shut down for the second time in five years.

"To me, it feels like a clear case of corporate bullying," Muller-Moore said in a recent interview at his home office.

The dispute between the backyard Vermont T-shirt maker, founded in 2000, and the chicken sandwich giant, founded in 1967 in a suburban Atlanta mall, hinges on the phrase, "Eat More Kale." Chick-fil-A says Muller-Moore's T-shirt infringes on its trademarked slogan, "Eat More Chikin," the centerpiece of a clever advertising campaign launched in 1995, featuring a "renegade cow" painting the three words on a billboard in Atlanta. The campaign took the South by storm, changing the "burger-eating" landscape forever, as Chick-fil-A says on its website.

"These fearless cows, acting in enlightened self-interest, realized that when people eat chicken, they don't eat them," the website explains. "Today, the cows' herds have increased and their message reaches millions — on television, radio, the Internet, and the occasional water tower. Needless to say, Chick-fil-A fully endorses and appreciates the monumental efforts made by our most beloved bovine friends."

'Knocked the wind out of me'

Funny stuff, and actually, a campaign that Muller-Moore, 39, could appreciate, if not for the fact that Chick-fil-A is trying to bury him. The company first came after him in 2006, when a letter arrived "out of the blue," Muller-Moore says, demanding that he cease and desist from printing his T-shirts, and send Chick-fil-A whatever remaining inventory he had, effectively shutting down the business.

"Man, it knocked the wind out of me," Muller-Moore said. "I make my living as a foster parent. At the time, I had one small child. I now have two of my own. My business has grown every year. I'm certainly not getting rich. I can't live on it. It's the foster parenting gig that pays the bills, but that said, the business is growing every year. I'm in it for the long haul. I love T-shirts and I love having found a simple and accessible art."

Muller-Moore contacted the Vermont Arts Council in Montpelier and filled out a request for free legal help.

"It goes into the stratosphere and lawyers can take it or not," Muller-Moore said. "A couple of weeks into it, an attorney named Lisa Pearson from Manhattan took the case."

Pearson wrote a series of letters, Muller-Moore said, explaining that he is a foster parent, that he delivers Meals On Wheels as a volunteer, and that he is a "small potatoes micro business" in a very supportive state. The message: Don't mess with Muller-Moore because it will bring you some very ugly PR.

"So, they backed down silently," Muller-Moore said of Chick-fil-A. "They quit responding. I took that as a 'Go for it.'"

Chick-fil-A spokesman Jerry Johnston said this week the company does not discuss pending legal matters.

Fast forward to October 2011, when Muller-Moore's new pro bono attorney, Daniel Richardson of Tarrant, Gillies, Merriman & Richardson in Montpelier, received a letter from attorney Auma Reggy of the Atlanta firm, Arnall Golden Gregory LLP, representing Chick-fil-A. Reggy begins by establishing that Chick-fil-A is the "second largest quick-service chicken restaurant company in the United States," and that it has employed a "long-running, award-winning and very popular, successful and well-known advertisement campaign featuring cows encouraging the consumption of chicken rather than beef."

At the center of the campaign, Reggy explains, is Chick-fil-A's intellectual property, the phrase "EAT MOR CHIKIN." The company has used the phrase since at least 1995, Reggy writes, and owns numerous U.S. and international trademark and copyright registrations for both EAT MOR CHIKIN and for cows holding sandwich-boards reading EAT MOR CHIKIN.

Now to the crux of the matter. It has come to the attention of Chick-fil-A, Reggy writes, that Richardson's client filed an application Aug. 31 with the U.S. Patent and Trademark Office for a U.S. patent on the phrase, "Eat More Kale," for use on stickers, bags, sweatshirts, onesies for infants and toddlers, T-shirts, dresses, skirts, blouses, turtlenecks and yoga shirts.

"Your client's Eat More Kale Mark plays off of and imitates Chick-fil-A's valuable EAT MOR CHIKIN Intellectual Property by using a prefix confusingly similar to Chick-fil-A's federally registered EAT MOR CHIKIN trademarks," Reggy writes. "Your client's misappropriation of Chick-fil-A's EAT MOR CHIKIN Intellectual Property, to play off of and benefit from the extraordinary fame and goodwill of Chick-fil-A's trademarks, copyrights, and popular promotional campaign, is likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A's intellectual property and diminishes its value. Such actions constitute trademark infringement, dilution, and unfair competition in violation of federal and state law."

Reggy's letter goes on for five more pages, detailing Chick-fil-A's success with its "semiliterate cows," as a reporter for The Atlanta Journal-Constitution put it, including a spot on New York's Madison Avenue Advertising Walk of Fame. Reggy documents 30 other "Eat More" phrases that Chick-fil-A had already successfully defended against, including "EAT MORE GOAT" and "EAT MORE BEER," and cites lawsuits it had won against Burger King Corp. and others.

In the second-to-last paragraph of the letter, Reggy makes Chick-fil-A's demands. Muller-Moore is to immediately abandon his application for a U.S. trademark. He is to "cease and forever desist" all plans to use the phrase "Eat More Kale" for his business. And he is to arrange for the transfer of the eatmorekale.com domain name to Chick-fil-A.

"We note that Chick-fil-A would not object to your client's uses of "Eat Kale" or eatkale.com," Reggy writes, giving Muller-Moore seven days to comply or face "all available remedies," including opposition to Muller-Moore's application for a U.S. trademark.

The rebuttal

In his five-page response, Richardson begins by saying "there are a number of fundamental problems with your client's position that I believe your letter overlooks." First, he writes, no one is going to confuse "Eat More Kale," with "Eat mor Chikin."

"My client's phrase shares only six out of twelve of the same letters as your client's phrase and none of the imagery or conceits," Richardson writes. "My client has no cow designs which appear in conjunction with the phrase 'Eat More Kale.'"

The closest Chick-fil-A to Vermont, Richardson writes, is in Nashua, N.H., more than 120 miles away, and there is "zero competitive proximity" between a chicken sandwich restaurant and "one-at-a-time handmade t-shirts."

"My client's product is essentially folk-art that is unlikely to be confused with anything else," Richardson writes.

No wonder Chick-fil-A has not cited a single instance of actual confusion caused by Muller-Moore's "Eat More Kale" T-shirts, Richardson writes.

"Until 2006, my client was unaware of Chick-fil-A's advertising campaign or phrase," Richardson writes. "He developed his phrase independently and to reflect the Vermont culture and ethos. This is no surprise given the commonality of the phrase "Eat More" and the ubiquity of kale at Vermont's farmers' markets. My client's design and letter is his own and a result of his creative process that shares no common elements with your clients design or lettering."

Finally, Richardson points out that Chick-fil-A fell silent in 2006 when Muller-Moore's then-attorney said the restaurant's allegations were untrue, that the products were different and that no trademark violations had occurred.

"It is both unfair and inequitable for your client to return to the field and resume its abandoned demands," Richardson writes. "The law requires trademark holders to actively defend their marks if they believe there is infringement. Your clients abandoned this position and any arguments against my client."

Richardson concludes by suggesting Chick-fil-A back off, saying that if he didn't hear anything in two weeks he would consider the matter closed, unless Chick-fil-A requested an extension of time. His letter was dated Nov. 17. As of press time, he had received no response.

In an interview with the Free Press this week, Richardson said he filed for a federal trademark for Muller-Moore on a pro bono basis in August, then received the cease-and-desist letter from Chick-fil-A in October.

"I certainly didn't expect to have a multi-billion dollar corporation sending a letter demanding Bo shut down, but when you represent a client, you represent them through thick and thin," Richardson said. "It's not as if it was a moment of panic, but any time an entity that large starts to show attention to your very small client you have to have a serious conversation with your client."

Silly dispute? Hardly

Steve O'Donnell, an attorney in Lancaster, Pa., who practices trademark law and blogs at www.3cpatents.com, had a blog post in May 2010 about Chick-fil-A going after a company using the slogan "Eat More Produce." On its face, O'Donnell writes, the dispute sounds "pretty silly," but it isn't.

"If a trademark owner fails to protect their trademark, they run the risk of losing it," O'Donnell writes.

In an interview with the Free Press, O'Donnell explained that if Chick-fil-A lets the little guys such as Muller-Moore off the hook, they might be in no position to go after bigger fish such as McDonald's or Burger King should those companies infringe on a trademark. A judge might find that since they had allowed others to use similar slogans without doing anything about it, they had effectively lost their trademark.

"What Chick-fil-A is doing is reasonable because they have an obligation to police their mark," O'Donnell said. "They're being a little overly aggressive, but it's not unreasonable for them to make it plain they're watching their trademark. The kale guy could convince them through a letter or two that he's really not impacting their core business, just selling T-shirts. That might satisfy them."

Muller-Moore is well aware of the protecting-their-turf argument, but he doesn't buy it.

"This is apples versus zebras," Muller-Moore said. "If I had a vegetable stand, if I had a sandwich shop, if I had a CSA and was delivering kale to people to eat it, it could potentially be a different story. But I am making hand-printed T-shirts sold online. They are making chicken sandwiches sold in person at stores. Is there any room for any small business from the bottom up, or can corporations just squash it all?"

A shop is born

Muller-Moore moved to Vermont from Alabama in 1998 for the "lifestyle, politics, freedom and art," following his "back to the land" step-uncle, Jeff Teter, whose daughter, snowboarder Hannah Teter, won the 2006 Olympic gold medal in the half pipe in Torino, Italy.

"I moved here on a whim with a cat, a python and a Rottweiler, and married a Yankee," Muller-Moore said.

On Valentine's Day in 2000, Muller-Moore's wife gave him a screen printing kit from The Drawing Board, an art supply store in downtown Montpelier. He had been complaining about the homogenization of T-shirts.

"2000 was when Old Navy and Gap ruled the world," Muller-Moore said. "Everybody and their brother wore Old Navy and Gap on their chest. I guess I took T-shirts seriously enough that I couldn't imagine going to a rack and buying one of one million shirts."

Prompted by his wife, Muller-Moore repaired to his "office" above the garage that very night and hand-cut the stencil for his first shirt.

"She essentially said, 'Here you go, start printing,'" Muller-Moore said. "For a minute I was stumped but then the word 'cheese' popped into my head. I sat down and traced it with my fingers, cut it out, and printed it on a T-shirt."

Muller-Moore was working in the learning service department of Montpelier High School at the time, and when he walked in the next day with his cheese T-shirt on, it was a sensation. Within 24 hours, he had orders from students and faculty. Muller-Moore believes the cheese shirt struck a chord unique to Vermont.

"When I moved to Vermont, I began to learn about real food, and about people doing things for themselves, whether it was music or art," he said. "I never met such a concentration of people playing a part in the creative economy."

A couple of months after the debut of the cheese T-shirt, Muller-Moore was approached at the Montpelier Farmers Market by a local farmer named Paul Betts of High Ledge Farm, who asked him to make an "Eat More Kale" T-shirt. The first shirt went to Betts' young daughter. The shirt now occupies a place of honor on the wall of Muller-Moore's garage headquarters.

Muller-Moore ran into Betts again at the farmers market a few weeks after delivering the "Eat More Kale" T-shirt and was surprised to learn that others were "asking like crazy" for a shirt of their own.

"He said, 'It's all yours, do whatever you like with it. If you do sell a bunch, can I get a free one at Thanksgiving?'" Muller-Moore said.

A farmer's idea

Now that he's selling "thousands" of T-shirts every year at $25 a pop — Muller-Moore wouldn't be more specific about the exact number — he said the Betts family gets as many free T-shirts as they desire every Thanksgiving.

When he got the first cease-and-desist order from Chick-fil-A in 2006, Muller-Moore went to Betts and asked him about his "Eat More Kale" idea.

"I said, 'Paul, was your idea a parody or play off of Chick-fil-A?' He said, 'Chick what?'" Muller-Moore said. "I said, 'It's a fast food chain in the deep South.' He said, 'I'm a New England farmer. I grow kale. I wanted a shirt that said Eat More Kale.'"

As unconventional as Muller-Moore and his business are, he takes the threat from Chick-fil-A seriously. He said he wants the national trademark so he can sell his business some day if it grows large enough to interest a buyer, or so he can license his "Eat More Kale" T-shirts to Whole Foods or Trader Joe's, should either show an interest.

"It's not unheard of that this could some day be something much bigger than it is," Muller-Moore said. "There's not much in my life that shows much potential for profit. It would be neat to solidly say I'll have the money for my kids to go to college. Our family hasn't taken a vacation in three years. That would be pretty neat, and I've got something that shows some real potential."